Patent Process for Multimedia Software Scrutinized

The U.S. Commerce Department should temporarily stop granting
patents for multimedia software products, many of which are aimed at
the education market, until the patent process can be modernized,
witnesses at a forum on software-related patents said.

Citing three controversial patents awarded to optical-disk-based
products used in schools, witnesses said that unless the U.S. Patent
and Trademark Office cultivates greater technical acumen and opens the
confidential patent process to more public scrutiny, the office could
foster disputes and discourage product development.

Because there is no public-notification requirement governing
patents, classroom teachers could inadvertently find themselves
violating patent laws every time they use a CD-ROM or videodisk,
witnesses warned. And patent protection often is enforceable against
the end-users, who, in the case of education software, usually are
teachers.

The two-day hearing in Silicon Valley, held by Bruce A. Lehman, the
Commerce Department's commissioner of patents and trademarks, gave
critics the opportunity to explain why they believe the process is
antiquated and inefficient.

But, as befits the sometimes iconoclastic and highly idiosyncratic
software industry, some witnesses supported the existing patent
process, while others called for abolishing it outright.

"Don't cut back on patent protections for software-related
inventions simply because some invalid patents may have been issued,''
said Richard LeFaivre, who heads Apple Computer Inc.'s
advanced-technology group.

"I'm arguing that software should not be allowed patent protection,
not because it is difficult to do, but because it is wrong to do so,''
countered Douglas K. Brotz, the principal scientist for Adobe Systems
Inc., a company that recently announced plans to donate millions of
dollars in software to schools. "It grants a right to the patent holder
to devastate innocent businesses.''

Public Scrutiny

In convening the meeting, Mr. Lehman said the Clinton Administration
intends to introduce legislation to make the patent process more open
to third-party scrutiny.

He also noted that the 160 patent examiners who review software
handled 8,300 patent applications in 1993, up from 6,600 in 1991.

Still, many here questioned the competence of patent examiners,
noting that patents were awarded to two education publishers for
processes that critics argue are commonly used in the industry. (See
Education Week, Jan. 12, 1994.)

Videodiscovery, a publisher of science-related videodisks, has taken
its competitor, Optical Data Corporation, to court, claiming that
Optical Data was erroneously awarded patents on an instructional method
and a publishing process.

"A patent was called to my attention [by Optical Data] that
literally could have driven me out of business,'' Joe Clark, the
founder and chief executive officer of Videodiscovery, said at the
hearing.

A federal judge in Seattle last month dismissed the Videodiscovery
suit, though Mr. Clark said he was unaware of the development when he
testified here.

Optical Data previously donated the patent on its instructional
method to the public domain and has requested that the patent office
re-examine the second award.

Mr. Clark called on Mr. Lehman to stop issuing patents to software
developers until a peer-review panel of industry experts could be
appointed to review applications.

He also said the patent process should be amended to require the
publication of patent applications prior to the actual awards.

In the Classrooms

Although the dispute over patent rights appears to be an arcane
debate among industry insiders, the issue could have important
ramifications for educators.

For example, Compton's NewMedia, a San Diego-based company that
publishes a compact-disk-based encyclopedia frequently used in schools,
stunned the industry by announcing late last year that it had, in
essence, patented the concept of "multimedia'' software.

Observers said that Compton would have difficulty asserting its
rights under the patent to claim royalties from all multimedia products
but were troubled by the award nonetheless.

In an unusual move, the patent office chose to re-examine the
controversial award. The Optical Data patent, observers said, is more
likely to affect schools and perhaps set a dangerous precedent.

Tom Lopez, the president of the Maryland-based Interactive
Multimedia Association, noted that, "in this case, the direct
infringers on the patent would have been the hundreds of thousands of
teachers in classrooms.''

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